Protecting your brand in the age of gTLDs dot sucks

ICANN has made it possible to serve up every brand owner’s worst nightmare; welcome to [yourbrand].sucks. ICANN and registries of new gTLDs have painted a rosy picture of the new Internet landscape, advocating that the introduction of new top level domains, like .app and .restaurant is a way to increase choice and competition. Unfortunately, the introduction of the new gTLDs has created a harsh reality for brand owners who are forced to decide how far they are willing to go to protect their valuable brands through the preemptive purchase of domain names with otherwise undesirable gTLDs.

Would-be gTLD domain registries were required to pay at least $175,000 to obtain the right to offer domain names with a new gTLD of their choice, so it was understood that the cost to domain registrants for a second level domain wouldn’t necessarily be cheap. Plus, the registrars need to mark the prices up to account for integration, registration and the continued maintenance of the domains. When brand owners find themselves paying top dollar for second level domain names only for the purpose of preventing someone from disparaging their brand, exorbitant registration costs may feel like blackmail.

What is .sucks’ platform?

The term sucks has become known as an expression of disappointment or slang for bad or poor quality. Much of the controversy surrounding the .sucks gTLD is caused by perception that the gTLD would serve no constructive purpose. So why would ICANN allow a gTLD like .sucks into the Internet space? Brands and critics like former Senator Rockefeller feel .sucks is a “predatory shakedown” — even extortion. Initially, rumors swirled that Vox Populi, owner of the .sucks gTLD, would charge trademark owners $25,000 to register a .sucks domain. Though they proved false, the company set the .sucks domain registration price at a still outlandish $2,499 for registrations during the sunrise period. This puts brand owners in the position of weighing the uniquely high cost of registering a .sucks domain name (or multiple such domains aimed at protecting multiple trademarks or variations) against the potential reputational costs and domain recovery costs of someone registering a brandname.sucks domain name and using it to disparage a brand.

Vox Populi (Latin for “voice of the people”) does not see it this way. The registry believes that this gTLD has value beyond many other gTLDs and promotes the .sucks gTLD as having “the potential to become an essential part of every organization’s customer relationship management program.” The gTLD attempts to demonstrate that the gTLD is not meant to be disparaging but to be a “central town square” forum for “protest.” Ralph Nader, consumer advocate, states in the promotional video released by the registry that “the word sucks is now a protest word and it’s up to people to give it more meaning.” The Vox Populi registry has even produced a dramatic video attempting to put the term in a better light by associating it with Martin Luther King, grassroots protests, and the pursuit of liberty. Seriously.

What is .sucks going to cost brand owners?

Today .sucks enters the sunrise period. For companies that want to secure brandname.sucks domain names during the sunrise period, Vox Populi will charge $2,499 a year for each domain name they wish to secure so they can avoid unauthorized registration of a brandname.sucks domain name and any associated disparaging content. This seems outlandish in comparison to the $100 domain registrations charged by .adult and .porn. Consumers will pay $249, a more reasonable price, for standard registrations that include a domain name that falls outside the premium and sunrise premium categories.

The .sucks registry also is putting another spin on the .sucks domain space by offering domain block and Consumer Advocate Subsidized registrations. The registry states that it “recognizes that some may simply want to block a name from being used in the .sucks name space,” and therefore, they have created a product that will allow anyone to place any domain available as a standard registration domain (as defined by the .sucks registry) on the reserved list for a year preventing any registration of the domain. A domain block will be allocated on a first-come, first-served basis at a price of $199 a year and may be renewed for up to 10 years. Though this initially sounds like great news for brand owners, there is a catch — domain blocks are not available for domain names classified as premium or sunrise premium domains.

The consumer advocate subsidized registration will be available beginning September 2015 and will cost $9.95. This program is expressly intended to encourage consumers to establish gripe sites at domain names in the form of www.ProductA.sucks domain (the domain name example provided on the registry website). A consumer advocacy forum platform, everything.sucks, has contracted with the .sucks registry to allow the purchase of domains by individual consumers who wish to host a forum discussion website. If you obtain a consumer advocate registration within .sucks you will be provided a free, hosted, consumer forum, which means your domain www.brand.sucks will resolve to a website with a discussion forum on said brand. The registrant may not be a corporation or in any way affiliated with the corporation the domain is referencing.

To summarize:

Any .sucks domain name registered during the sunrise period will cost $2,499 per year, and will renew at the same rate.

Any premium .sucks domain name registration will be individually priced by the participating registrars. According to the registry, examples of premium names include “life.sucks” and “divorce.sucks.”

The confusingly named sunrise premium .sucks domain names will cost $2,499, whether registered during the sunrise period or general availability.

Which domain names will be classified as sunrise premium domains is not clear, but the registry provides a clue by stating that the list of such domain names “was created by analyzing previous top level domain sunrises and block product purchases” and, further, that sunrise premium names will qualify for the consumer advocate subsidized program. This vague explanation suggests that the registry will classify productname.sucks and brandname.sucks as sunrise premium domain names, thereby driving up the cost of domain registration for mark owners and providing opportunities for reduced prices if registered for critical use by consumers. Read more about the registry and pricing for .sucks registrations.

What can brand owners do?

As practitioners guiding our clients through this new and constantly evolving process, we generally recommend that all brand owners consider preemptively registering gTLD domains if there are specific gTLDs of interest to their sector or that could be particularly harmful. With the potentially steep cost of .sucks domain registrations, the cost/benefit analysis changes. As such, companies will need to carefully assess whether securing and maintaining a .sucks domain name will be worth the annual fee. Simply registering www.brand.sucks, does not take into account the multiple variations or typo squatted names that are possible. Just registering one domain name does not protect the brand owner from the many other opportunities for third parties to get their hands on a domain that could cast a not-so-favorable light on the brand.

Though UDRP actions have been a valuable tool for brand owners, a UDRP complaint is far less likely to be successful if the domain name at issue is being used in the context of brand or product consumer review or criticism. The thought of spending $2,499 per year for an otherwise unwanted domain is not pleasant, but brand owners should also keep in mind the potential difficulties they could face in recovering a brandname.sucks domain name or stopping disparaging use after it begins.

Porter Wright Morris & Arthur LLP

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